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Copyright 2014 Banner & Witcoff, ltd.Circuit agreed with the district court’s conclusion that an injunction would prevent
the public from enjoying a wide range of non-infringing features based on “limited
non-core functions.”
Trebro Mfg. v. Firefly Equipment, LLC, 748 F.3d 1159 (Fed. Cir. 2014). The Federal
Circuit reversed a district court’s refusal to grant a preliminary injunction to a patent
owner that did not itself practice the patented invention. According to the Federal
Circuit, “the fact that Trebro does not presently practice the patent does not detract
from its likely irreparable harm.... Trebro and FireFly are direct competitors
selling competing products in the market. Thus, the record strongly shows a
probability for irreparable harm.” The court also quoted approvingly from an earlier
case: “a patentee’s failure to practice an invention does not necessarily defeat the
patentee’s claim of irreparable harm.”
- Attorney’s Fees
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749 (2014). Section
285 of the patent statute permits a district court to award attorney’s fees “in
exceptional cases... to the prevailing party.” Existing Federal Circuit case law held
that a case could be held “exceptional” in only two situations: (1) when there has
been some material inappropriate conduct, or (2) when the litigation is both “brought
in subjective bad faith” and is “objectively baseless.” In this case, ICON sued
Octane for infringing several claims of a patent relating to exercise equipment. The
district court granted Octane’s motion for summary judgment, concluding that the
patent was not infringed. Octane moved for attorney’s fees, but the district court
denied the motion because Octane did not show that the suit was “objectively
baseless” or that ICON had brought it in subjective bad faith. The Federal Circuit
affirmed, but the Supreme Court granted certiorari, reversed and remanded.
The Supreme Court began with reference to dictionary definitions of the word
“exceptional” from the 1930s, which were in use at the time Congress enacted the
1952 Patent Act. In that context, the word meant “out of the ordinary course,”
“unusual,” or “special.” “We hold, then, that an ‘exceptional’ case is simply one that
stands out from others with respect to the substantive strength of a party’s litigating
position (considering both the governing law and the facts of the case) or the
unreasonable manner in which the case was litigated. District courts may determine
whether a case is ‘exceptional’ in the case-by-case exercise of their discretion,
considering the totality of the circumstances.”
The Supreme Court rejected the Federal Circuit’s “rigid and mechanical”
formulation established in Brooks Furniture Mfg, Inc. v. Dutalier Int’l, Inc., 393 F.3d
1378 (Fed. Cir. 2005), noting that its standard was nearly the same as that for
“sanctionable conduct” under Federal Rule of Civil Procedure Rule 11. Instead, “a
district court may award fees in the rare case in which a party’s unreasonable
conduct – while not necessarily independently sanctionable – is nonetheless so
‘exceptional’ as to justify an award of fees. Finally, “we reject the Federal Circuit’s